UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`FORD MOTOR COMPANY
`Petitioner
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2015-00787
`Patent 7,237,634
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S
`RESPONSE TO PETITION
`
`

`
`Patent No. 7,237,634
`Patent Owner’s Response
`
`
`
`
`Case IPR2015-00787
`Attorney Docket No: 36351-0015IP7
`
`TABLE OF CONTENTS
`
`
`
`I. 
`
`II. 
`
`INTRODUCTION ........................................................................................... 1 
`
`THE ’634 PATENT ......................................................................................... 3 
`
`A. 
`
`B. 
`
`Background of the ’634 Patent .............................................................. 3 
`
`Claim Construction ............................................................................... 6 
`
`1. 
`
`“setpoint (SP)” ............................................................................ 7 
`
`The Challenged Claims Require a Comparison of “Road Load”
`2. 
`to “Setpoint” and/or “MTO” ............................................................... 11 
`
`III.  ARGUMENT ................................................................................................. 16 
`
`A. 
`
`B. 
`
`Ford Will Be Estopped from Maintaining its Challenges to Claim 215
` ............................................................................................................. 17 
`
`Grounds 1-3 are Deficient—Ford Has Failed to Demonstrate that
`Ibaraki ’882 Discloses or Renders Obvious the Features Recited in the
`Challenged Claims .............................................................................. 17 
`
`1. 
`
`2. 
`
`Ibaraki ’882 does not compare “road load” to “setpoint” ......... 17 
`
`Ibaraki ’882 does not compare “road load” to “MTO” ............ 34 
`
`Ibaraki ’882 does not disclose a setpoint that is substantially less
`3. 
`than MTO ............................................................................................ 45 
`
`C. 
`
`Ground 2 is Deficient—the Prior Art of Record Fails to Disclose
`Limiting a Rate of Change of Torque Output of the Engine to Achieve
`Stoichiometry ...................................................................................... 48 
`
`Vittone Does Not Disclose Controlling the Engine by Limiting a
`1. 
`Rate of Change of Torque Output of the Engine ................................ 49 
`
`i
`
`

`
`Patent No. 7,237,634
`Patent Owner’s Response
`
`
`
`
`Case IPR2015-00787
`Attorney Docket No: 36351-0015IP7
`
`Ford Fails to Establish a Motivation to Combine Vittone with
`2. 
`Ibaraki ‘882 ......................................................................................... 52 
`
`D.  Ground 3 is Deficient—Ford Fails to Establish a Rationale to Combine
`Severinsky with Yamaguchi ................................................................ 54 
`
`IV.  CONCLUSION .............................................................................................. 55 
`
`
`
`ii
`
`
`
`
`
`
`
`

`
`Patent No. 7,237,634
`Patent Owner’s Response
`
`Case IPR2015-00787
`Attorney Docket No: 36351-0015IP7
`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`In re Abbott Diabetes Care Inc.,
`696 F.3d 1142 (Fed. Cir. 2012) .......................................................................... 10
`
`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015) ............................................................................ 6
`
`Fuji Photo Film Co. v. Int'l Trade Comm’n,
`386 F.3d 1095 (Fed. Cir. 2004) .......................................................................... 10
`
`Hockerson-Halberstadt, Inc. v. Avia Group Int’l,
`222 F.3d 951 (Fed. Cir. 2000) ...................................................................... 45, 47
`
`Innogenetics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008) .................................................................... 52, 55
`
`Ex Parte James R. Bosserdet Jr.,
`Appeal 2012-001420, 2014 WL 5590704 (PTAB Oct. 9, 2014) ....................... 48
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................ 31
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 31
`
`Merck & Co. v. Teva Pharm. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005) .......................................................................... 13
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) ............................................................ 6, 7, 10, 13
`
`Microsoft Corporation v. Enfish, LLC,
`IPR2013-00559, Paper 65 (PTAB Mar. 3, 2015) ............................................... 52
`
`Nystrom v. Trex Co.,
`424 F.3d 1136 ..................................................................................................... 45
`
`iii
`
`

`
`Patent No. 7,237,634
`Patent Owner’s Response
`
`
`
`
`Case IPR2015-00787
`Attorney Docket No: 36351-0015IP7
`
`Salesforce.com, Inc. v. VirtualAgility, Inc.,
`CBM2013-00024, Paper 16 (PTAB Nov. 19, 2013) .......................................... 53
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) ............................................................................ 6
`
`Texas Instruments v. United States ITC,
`988 F.2d 1165 (Fed. Cir. 1993) .......................................................................... 47
`
`In re Vaidyanathan,
`381 Fed. Appx. 985 (Fed. Cir. 2010) .................................................................. 10
`
`In re Wright,
`569 F.2d 1124 (C.C.P.A. 1977) .......................................................................... 46
`
`Statutes
`
`35 U.S.C. § 103 .......................................................................................................... 1
`
`35 U.S.C. § 315(e)(1) ............................................................................................... 17
`
`Other Authorities
`
`37 C.F.R. § 42.100 ................................................................................................... 17
`
`
`
`
`
`
`
`iv
`
`

`
`Patent No. 7,237,634
`Patent Owner’s Response
`
`
`
`
`Case IPR2015-00787
`Attorney Docket No: 36351-0015IP7
`
`EXHIBITS
`
`Exhibit Name
`Table of Ford’s IPR Petitions
`Gregory W. Davis, Deposition Tr. (IPR2014-00884,
`IPR2014-00904) (Feb. 25, 2015)
`The Oxford Essential Dictionary, American Ed. (1998)
`(excerpt)
`Appendix A (Jan. 15, 2014)
`Declaration of Daniel A. Tishman in Support of Patent
`Owners’ Motion for Pro Hac Vice Admission
`Declaration of Neil Hannemann
`Neil Hannemann CV
`Jeffery L. Stein, Deposition Tr. (IPR2014-00875)
`(Mar. 3, 2015)
`Gregory W. Davis, Deposition Tr. (IPR2015-00722,
`IPR2015-00784,
`IPR2015-00787,
`IPR2015-00790,
`IPR2015-00791,
`IPR2015-00794,
`IPR2015-00795)
`(January 13, 2016)
`Hybrid Power Unit Development for Fiat Multipla
`Vehicle,” by A. Caraceni, G. Cipolla, and R. Barbiero,
`SAE Publication 981124 (1998) (“Caraceni”)
`Ehsani et al., Modern Electric Hybrid Electric, and
`Fuel Cell Vehicles (2005)
`Gregory W. Davis, Deposition Tr. (IPR2014-00571,
`IPR2014-00579) (January 13, 2015)
`Ex. 1661 from IPR2015-00790
`
`
`
`v
`
`Exhibit Number
`Ex. 2701
`Ex. 2702
`
`Ex. 2703
`Ex. 2704
`Ex. 2705
`Ex. 2706
`Ex. 2707
`Ex. 2708
`
`Ex. 2709
`
`Ex. 2710
`
`Ex. 2711
`
`Ex. 2712
`Ex. 2713
`
`
`
`
`

`
`Patent No. 7,237,634
`Patent Owner’s Response
`
`
`
`
`Case IPR2015-00787
`Attorney Docket No: 36351-0015IP7
`
`Pursuant to 37 C.F.R. § 42.120 and the Decision to Institute (“Institution
`
`Decision” or “Inst. Dec.”), Patent Owners Paice LLC and the Abell Foundation, Inc.
`
`(collectively, “Paice”) hereby submit this Response to the Petition for Inter Partes
`
`Review of U.S. Patent. No. 7,237,634 under 35 U.S.C. § 311 et seq., and 37 C.F.R.
`
`§ 42.100 et seq. (“Petition” or “Pet.”) filed by Ford Motor Company (“Ford”).
`
`I.
`
`INTRODUCTION
`
`U.S. Patent. No. 7,237,634 (“the ’634 patent”), which is the subject of the
`
`present Petition, claims an inventive and novel method of control for a hybrid
`
`electric vehicle that uses road load, setpoint, and the maximum torque output of an
`
`internal combustion engine to determine when to transition between various
`
`operating modes in which the vehicle is propelled by an electric motor, an internal
`
`combustion engine, or both. Ford’s Petition challenges claims 33, 34, 35, 38, 53,
`
`54, 215, 238, 241, 252, 253, 254, 255, 256, 259, 261, 262, 267, 281, 282, 285, 287,
`
`and 288 (“the challenged claims”) as obvious under 35 U.S.C. § 103. Following
`
`Paice’s preliminary response, filed on August 10, 2015, the Board instituted review
`
`of each of the challenged claims, except for claims 33, 34, 35, 38, 53, and 54, as
`
`obvious over various combinations of U.S. Patent No. 5,789,882 to Ibaraki et al.
`
`(Ex. 1752) (“Ibaraki ’882”), Oreste Vittone et al., FIAT Research Centre, Fiat
`
`Conceptual Approach to Hybrid Car Design (Ex. 1753) (“Vittone”), and U.S. Patent
`
`1
`
`

`
`Patent No. 7,237,634
`Patent Owner’s Response
`
`
`
`
`Case IPR2015-00787
`Attorney Docket No: 36351-0015IP7
`
`No. 5,865,263 to Yamaguchi (Ex. 1754) (“Yamaguchi”). All challenged claims are
`
`patentable over the cited grounds for the reasons set forth herein.
`
`Ford’s arguments with regards to the ’634 patent are fundamentally flawed.
`
`The ’634 patent’s innovative control strategy, using road load, setpoint, and the
`
`engine’s maximum torque output (MTO) to decide which operating mode to select
`
`to maximize efficiency, is absent in the cited references. Instead, Ibaraki ’882
`
`discloses selecting operating modes based on power, not road load or torque-based
`
`setpoints. The following illustration of each control system reveals the manifest
`
`differences:
`
`
`
`The control strategy claimed by the ’634 patent compares road load to
`
`setpoint and MTO, and, as a result, operates the engine at a wide range of
`
`relatively high torque values across the engine’s entire speed range, as depicted
`
`above on left. The power-based control strategy of Ibaraki ’882, compares the
`
`instantaneous drive power to power thresholds (which are unrelated to the engine’s
`
`2
`
`

`
`Patent No. 7,237,634
`Patent Owner’s Response
`
`
`
`
`Case IPR2015-00787
`Attorney Docket No: 36351-0015IP7
`
`MTO) and, therefore, operates the engine in a defined range of power values, as
`
`depicted above on right. Consequently, Ibaraki ’882 operates the motor much
`
`more frequently than the inventive, road load-based control strategy claimed in the
`
`’634 patent. Ford has presented no logical rationale as to why the ’634 patent’s
`
`control system would be rendered obvious by the power-based system of Ibaraki
`
`’882.
`
`II. THE ’634 PATENT
`A. Background of the ’634 Patent
`The ’634 patent, entitled “Hybrid Vehicles,” issued on July 3, 2007, from an
`
`application with a priority date of September 14, 1998. The ’634 patent discloses
`
`embodiments of a hybrid electric vehicle, with an internal combustion engine, two
`
`electric motors and a battery bank. A microprocessor is employed to control the
`
`internal combustion engine, the two electric motors, and the battery bank based on
`
`the hybrid vehicle’s instantaneous torque requirements such that the internal
`
`combustion engine is only run under high efficiency conditions. See, e.g., Ex. 1750
`
`at Abstract.
`
`An embodiment of the hybrid vehicle disclosed in the ’634 patent is shown in
`
`Figure 3, reproduced below:
`
`3
`
`

`
`Patent No. 7,237,634
`Patent Owner’s Response
`
`
`
`
`Case IPR2015-00787
`Attorney Docket No: 36351-0015IP7
`
`
`
`Id. at Fig. 3. As shown, a traction motor 25 is connected to the road wheels 34
`
`through a differential 32. A starter motor 21 is connected to the internal combustion
`
`engine 40. The motors 21 and 25 are functional as either motors or generators,
`
`depending on the operation of the corresponding inverter/charger units 23 and 27,
`
`which connect the motors to the battery bank 22. See id. at 26:19-30.
`
`These components are controlled by a microprocessor 48 or any controller
`
`capable of examining input parameters and signals and controlling the mode of
`
`operation of the vehicle. See, e.g., id. at 26:31-27:25. For example, control of engine
`
`40 is accomplished by way of control signals provided by the microprocessor to the
`
`electronic fuel injection (EFI) unit 56 and electronic engine management (EEM) unit
`
`55. Control of (1) starting of the engine 40; (2) use of motors 21 and 25 to provide
`
`propulsive torque; or (3) use of motors as generators to provide regenerative
`
`4
`
`

`
`Patent No. 7,237,634
`Patent Owner’s Response
`
`
`
`
`Case IPR2015-00787
`Attorney Docket No: 36351-0015IP7
`
`recharging of battery bank 22, is accomplished through control signals provided by
`
`the microprocessor to the inverter/charger units 23 and 27. See, e.g., id. at 26:64-
`
`27:25; 28:42-52.
`
`The hybrid vehicle may be operated in a number of modes based on the
`
`vehicle’s instantaneous torque requirements, the engine’s maximum torque output,
`
`the state of charge of the battery, and other operating parameters. In an
`
`implementation of the ’634 patent, the microprocessor employs a hybrid system
`
`control strategy based on sensed and calculated values for system variables that are
`
`evaluated against setpoints and causes the vehicle to operate in various operating
`
`modes pursuant to this control strategy. See, e.g., id. at 40:16-26.
`
`For example, in mode I, the hybrid vehicle is operated as an electric car, with
`
`the traction motor providing all torque to propel the vehicle. Id. at 37:24-32. As
`
`the vehicle continues to be propelled in electric only mode, the state of charge of the
`
`battery may become depleted, and need to be recharged. In this case, the hybrid
`
`vehicle may transition to mode II to recharge the battery, in which the vehicle
`
`operates as in mode I, with the addition of the engine running the starter/generator
`
`motor to provide electrical energy to operate the traction motor and recharge the
`
`battery. See, e.g., id. at 37:32-36. When the internal combustion engine can be
`
`operated in its fuel efficient range to propel the vehicle, the hybrid vehicle operates
`
`in mode IV, with the engine providing torque to propel the vehicle. Id. at 37:42-44;
`
`5
`
`

`
`Patent No. 7,237,634
`Patent Owner’s Response
`
`
`
`
`Case IPR2015-00787
`Attorney Docket No: 36351-0015IP7
`
`38:51-61. If the vehicle requires additional torque, such as for acceleration or hill-
`
`climbing, the vehicle may enter mode V, where the traction motor provides
`
`additional torque to propel the vehicle beyond that provided by engine 40. Id. at
`
`38:1-8.
`
`B. Claim Construction
`In IPR proceedings, the Board applies the “broadest reasonable interpretation”
`
`standard, which mandates that “[a] claim in an unexpired patent shall be given its
`
`broadest reasonable construction in light of the specification of the patent in which
`
`it appears.” 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793
`
`F.3d 1268, 1278 (Fed. Cir. 2015). The Federal Circuit has recognized, however, that
`
`that standard requires that the claims must be read in light of the specification as it
`
`would be interpreted by one of ordinary skill in the art. In re Suitco Surface, Inc.,
`
`603 F.3d 1255, 1260 (Fed. Cir. 2010). In Microsoft Corp. v. Proxyconn, Inc., the
`
`Federal Circuit explained that the broadest reasonable interpretation does not mean
`
`that “the Board may construe the claims during IPR so broadly that its constructions
`
`are unreasonable under general claim constructions principles,” and that the
`
`construction must not be “divorced from the specification and the record evidence”
`
`and inconsistent with “the one that those skilled in the art would reach.” 789 F.3d
`
`1292, 1298 (Fed. Cir. 2015) (quoting In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir.
`
`2011); In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999)). “A construction that
`
`6
`
`

`
`Patent No. 7,237,634
`Patent Owner’s Response
`
`
`
`
`Case IPR2015-00787
`Attorney Docket No: 36351-0015IP7
`
`is ‘unreasonably broad’ and which does not ‘reasonably reflect the plain language
`
`and disclosure’ will not pass muster.” Microsoft, 789 F.3d at 1298 (quoting Suitco,
`
`603 F.3d at 1260).
`
`“setpoint (SP)”
`
`1.
`A “setpoint” is “a definite, but potentially variable value at which a transition
`
`between operating modes may occur.”1 In its Institution Decision, the Board
`
`construed “setpoint” as a “predetermined torque value that may or may not be reset.”
`
`Paice respectfully requests that the Board reconsider its construction as it is
`
`unreasonably broad and does not reasonably reflect the disclosure of the ’634 patent.
`
`
`
`1 As the Board is aware, the U.S. District Court for the Eastern District of
`
`Texas and the U.S. District Court for the District of Maryland both have construed
`
`the term “setpoint (SP)” to mean “a definite, but potentially variable value at which
`
`a transition between operating modes may occur.” See Paice LLC v. Toyota Motor
`
`Corp., Case No. 2:07-cv-180 (E.D. Tex. Dec. 5, 2008) (Ex. 1756 at 204); Paice LLC
`
`v. Hyundai Motor Corp., Case No. 2:12-cv-499 (D. Md. Jul. 24, 2014) (Ex. 1757 at
`
`103) (“The Plaintiffs’ proposed construction of ‘setpoint’ as ‘a definite, but
`
`potentially variable value at which a transition between operating modes may occur,’
`
`is consistent with the language of the claims and the intrinsic evidence.”).
`
`7
`
`

`
`Patent No. 7,237,634
`Patent Owner’s Response
`
`
`
`
`Case IPR2015-00787
`Attorney Docket No: 36351-0015IP7
`
`Instead, the Board should adopt Paice’s construction (“a definite, but potentially
`
`variable value at which a transition between operating modes may occur”).
`
` The claims and the specification of the ’634 patent make clear that a
`
`“setpoint” is not simply a numerical value divorced from the context of the control
`
`system. Rather, “setpoint” serves the crucial function of marking the transition from
`
`one claimed mode to another, and in particular, the transition from propelling the
`
`vehicle with the motor to propelling the vehicle with the engine. See, e.g., Ex. 1750
`
`at 40:41-49.
`
`For example, in claims 33, 80 and 161, the “setpoint” marks the transition
`
`between a mode in which only the motor propels the vehicle, to modes in which the
`
`engine also can be used to propel the vehicle or charge the battery. See id. at claims
`
`33 (“operating at least one electric motor to propel the hybrid vehicle when the RL
`
`required to do so is less than a setpoint (SP)”), 80 (same), 161 (“wherein the hybrid
`
`vehicle is operated in a plurality of operating modes corresponding to values for the
`
`RL and a setpoint (SP)”).
`
`Additionally,
`
`the specification unambiguously defines “setpoint” as
`
`synonymous with a “transition point” between modes:
`
`[I]n the example of the inventive control strategy discussed above, it is
`repeatedly stated that the transition from low-speed operation to
`highway cruising occurs when road load is equal to 30% of MTO. This
`setpoint, referred to in the appended claims as "SP", and sometimes
`
`8
`
`

`
`Patent No. 7,237,634
`Patent Owner’s Response
`
`
`
`
`Case IPR2015-00787
`Attorney Docket No: 36351-0015IP7
`
`hereinafter as the transition point (i.e., between operation in modes I
`and IV) is obviously arbitrary and can vary substantially, e.g., between
`30-50% of MTO, within the scope of the invention.
`
`Id. at 40:41-49; see also id. at 40:16-26 (“the microprocessor tests sensed and
`
`calculated values for system variables, such as the vehicle’s instantaneous torque
`
`requirement, i.e., the ‘road load’ RL . . . against setpoints, and uses the results of the
`
`comparisons to control the mode of vehicle operation.”), 40:63-65 (“For example,
`
`in response to recognition of a regular pattern as above, the transition point might be
`
`adjusted to 60% of MTO”), 41:4-8 (“It is also within the scope of the invention to
`
`make the setpoint SP to which the road load is compared to control the transition
`
`from mode I to mode IV somewhat ‘fuzzy’ [sic], so that SP may vary from one
`
`comparison of road load to MTO to the next depending on other variables”), 41:59-
`
`63 (“FIG. 9 thus shows the main decision points of the control program run by the
`
`microprocessor, with the transition point between mode I, low-speed operation, and
`
`mode IV highway cruising, set at a road load equal to 30% of MTO”), 44:24-31
`
`(“Further, as noted above the transition points between modes I, IV, and V in
`
`particular may vary in accordance with the operator's commands”).
`
`The Board’s initial construction of “setpoint” as a “predetermined torque
`
`value that may or may not be reset,” see Inst. Dec. at 12, is incorrect and
`
`unreasonably broad because it fails to recognize that “setpoint” represents a point at
`
`which a transition between different operating modes may occur. The broadening
`
`9
`
`

`
`Patent No. 7,237,634
`Patent Owner’s Response
`
`
`
`
`Case IPR2015-00787
`Attorney Docket No: 36351-0015IP7
`
`construction is “divorced from the specification and the record evidence” and
`
`inconsistent with “the one that those skilled in the art would reach.” See Microsoft,
`
`789 F.3d at 1298 (quoting NTP, 654 F.3d at 1288; Cortright, 165 F.3d at 1358). In
`
`essence, the construction covers hybrid vehicle systems where transitions between
`
`modes never occur—a clear error that is fundamentally contrary to the specification
`
`of the ’634 patent. See Fuji Photo Film Co. v. Int'l Trade Comm’n, 386 F.3d 1095,
`
`1098 (Fed. Cir. 2004) (claim should not be given overly broad construction that is
`
`inconsistent with how claim term is used in the specification). The Board’s
`
`“broadest reasonable interpretation” must be reasonable, and must be in conformity
`
`with the invention as described in the specification. In re Vaidyanathan, 381 Fed.
`
`Appx. 985, 995-96 (Fed. Cir. 2010); see also In re Abbott Diabetes Care Inc., 696
`
`F.3d 1142, 1149 (Fed. Cir. 2012) (holding that Board’s construction of
`
`“electrochemical sensor” was “unreasonable and inconsistent with the language of
`
`the claims and the specification”).
`
`Additionally, as set forth in Paice’s preliminary response, “setpoint” should
`
`not be limited to a torque value—the specification makes clear that a setpoint is not
`
`limited to a torque value and in fact could also be a measure of the state of charge of
`
`the battery.
`
` [T]he microprocessor tests sensed and calculated values for system
`variables, such as the vehicle's instantaneous torque requirement, i.e.,
`the “road load” RL, the engine's instantaneous torque output ITO, both
`
`10
`
`

`
`Patent No. 7,237,634
`Patent Owner’s Response
`
`
`
`
`Case IPR2015-00787
`Attorney Docket No: 36351-0015IP7
`
`being expressed as a percentage of the engine's maximum torque output
`MTO, and the state of charge of the battery bank BSC, expressed as a
`percentage of its full charge, against setpoints, and uses the results of
`the comparisons to control the mode of vehicle operation.
`
`Ex. 1750 at 40:22-31 (emphasis added).
`
`Therefore, Paice respectfully requests that the Board reconsider its
`
`construction and adopt Paice’s construction of “setpoint” to make clear that it is a
`
`value “at which a transition between operating modes may occur.”
`
`2.
`
`The Challenged Claims Require a Comparison of “Road
`Load” to “Setpoint” and/or “MTO”
`
`Each of the challenged claims requires “operating at least one electric motor
`
`to propel the hybrid vehicle when the RL required to do so is less than a setpoint
`
`(SP),” “operating an internal combustion engine of the hybrid vehicle to propel the
`
`hybrid vehicle when the RL required to do so is between the SP and a maximum
`
`torque output (MTO) of the engine,” and “operating both the at least one electric
`
`motor and the engine to propel the hybrid vehicle when the torque RL required to do
`
`so is more than the MTO.” See Ex. 1750 at claims 215, 241, and 267. Because Ford
`
`appears intent on interpreting these limitations in an unreasonably broad manner to
`
`essentially capture any system where a torque value is above/below a threshold
`
`either by coincidence or otherwise, the Board should construe these limitations to
`
`make clear that the claimed controller (or method of control) selects operating modes
`
`based on a comparison of road load to setpoint or MTO.
`11
`
`

`
`Patent No. 7,237,634
`Patent Owner’s Response
`
`
`
`
`Case IPR2015-00787
`Attorney Docket No: 36351-0015IP7
`
`Specifically, the Board should construe “operating at least one electric motor
`
`to propel the hybrid vehicle when the RL required to do so is less than a setpoint
`
`(SP)” as “operating at least one electric motor to propel the hybrid vehicle when a
`
`comparison of the RL to a setpoint (SP) results in a determination that the RL
`
`required to do so is less than a SP.” Second, the Board should construe “operating
`
`an internal combustion engine of the hybrid vehicle to propel the hybrid vehicle
`
`when the RL required to do so is between the SP and a MTO” as “operating an
`
`internal combustion engine of the hybrid vehicle to propel the hybrid vehicle when
`
`a comparison of the RL to a SP and a MTO results in a determination that the RL
`
`required to do so is between the SP and a MTO of the engine.” Third, the Board
`
`should construe “operating both the at least one electric motor and the engine to
`
`propel the hybrid vehicle when the torque RL required to do so is more than the
`
`MTO” as “operating both the at least one electric motor and the engine to propel the
`
`hybrid vehicle when a comparison of the RL to a MTO results in a determination
`
`that the torque RL required to do so is more than the MTO.”
`
`The broadest reasonable interpretation of these limitations requires that the
`
`controller (or method of control) employ the motor and/or engine based on a
`
`comparison of road load to setpoint and a maximum torque output of the engine.
`
`First, the intrinsic evidence of the ’634 patent, including the claims and the
`
`specification, makes clear that the invention is directed to a control algorithm for
`
`12
`
`

`
`Patent No. 7,237,634
`Patent Owner’s Response
`
`
`
`
`Case IPR2015-00787
`Attorney Docket No: 36351-0015IP7
`
`selecting operating modes based on the comparison of road load to SP and MTO.
`
`The plain language of the claims makes clear that a comparison of road load to SP
`
`and MTO is required. For example, the requirement in the challenged claims of
`
`“operating an internal combustion engine of the hybrid vehicle to propel the hybrid
`
`vehicle when the RL required to do so is between the SP and a MTO” makes clear
`
`to a person of ordinary skill in the art that road load must be compared to SP and
`
`MTO—otherwise, the language following the word “when” would be rendered
`
`superfluous. See Ex. 2706 at ¶ 36. It is axiomatic that “[c]laims should not be
`
`construed so as to render terms redundant or superfluous.” Microsoft Corp. v.
`
`Surfcast, Inc., IPR2013-00292, IPR2013-00293, IPR2013-00294, IPR2013-00295,
`
`Paper No. 93 at 11-12 (PTAB Oct. 14, 2014) (citing Bicon, Inc. v. Straumann Co.,
`
`441 F.3d 945, 950 (Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward
`
`giving effect to all terms in the claim.”)); see also Merck & Co. v. Teva Pharm. USA,
`
`Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives
`
`meaning to all the terms of the claim is preferred over one that does not do so.”). In
`
`other words, the term “when” must be understood to have causative effect. To
`
`interpret the challenged claims to require mere coincidence would be a construction
`
`“divorced from the specification and the record evidence” and inconsistent with “the
`
`one that those skilled in the art would reach.” Microsoft Corp. v. Proxyconn, Inc.,
`
`789 F.3d 1292, 1298 (Fed. Cir. 2015) (quoting In re NTP, Inc., 654 F.3d 1279, 1288
`
`13
`
`

`
`Patent No. 7,237,634
`Patent Owner’s Response
`
`(Fed. Cir. 2011).
`
`
`
`
`Case IPR2015-00787
`Attorney Docket No: 36351-0015IP7
`
`Next, the specification of the ’634 patent specifically describes a control
`
`algorithm, depicted in Fig. 9, that selects operating modes by comparing road load
`
`to SP and MTO. See Ex. 1750 at Fig. 9; col. 41:59-62 (“FIG. 9 thus shows the main
`
`decision points of the control program run by the microprocessor, with the transition
`
`point between mode I, low-speed operation, and mode IV highway cruising, set at a
`
`road load equal to 30% of MTO”); see also id. at 40:41-44 (“For example, in the
`
`example of the inventive control strategy discussed above, it is repeatedly stated that
`
`the transition from low-speed operation to highway cruising occurs when road load
`
`is equal to 30% of MTO.”); id. at 41:4-8; id. at 41:30-33. Indeed, this Board has
`
`previously recognized that the microprocessor of the claimed invention compares
`
`road load to setpoint. See Inst. Dec. at 3 (“The microprocessor compares the
`
`vehicle’s torque requirements and the engine’s torque output against a predefined
`
`setpoint and uses the results of the comparison to control the vehicle’s mode of
`
`operation, e.g., straight-electric, engine-only, or hybrid.” (citing Ex. 1750 at 40:16-
`
`49)).
`
`Even Ford appears to concede that the claims of the ’634 patent require a
`
`comparison of road load to setpoint and MTO. For example, Ford explains:
`
`All claims recite a “setpoint” or “SP” value being compared to either:
`(1) an engine torque value (e.g., claim 1); or (2) a torque-based “road
`load” value (e.g., claim 33). No claims recite a “setpoint” or “SP” in
`
`14
`
`

`
`Patent No. 7,237,634
`Patent Owner’s Response
`
`
`
`
`Case IPR2015-00787
`Attorney Docket No: 36351-0015IP7
`
`comparison to any other system variable. Likewise, the specification
`says “the microprocessor tests sensed and calculated values for system
`variables, such as the vehicle’s instantaneous torque requirement, i.e.,
`the ‘road load’ RL . . . against setpoints, and uses the results of the
`comparisons to control the mode of vehicle operation.” (’634 Patent,
`Ex. 1750, 40:16-26, emphasis added.) To do so (e.g., whether “RL <
`SP”), the “setpoint” would have to be in the same measurement units
`as the “road load.”
`
`Pet. at 10-11 (emphasis added). Yet despite these admissions, Ford’s Petition makes
`
`clear that it chose to ignore the comparison and causation requirements. Ford first
`
`ignores the comparison between road load and setpoint, stating only that a torque
`
`value (which Ford equates to a setpoint) would be “known” at each vehicle speed
`
`along Ibaraki ‘882’s power threshold and that the torque component of the “required
`
`drive power” may be above or below that threshold. See, e.g., Pet. at 21. Likewise,
`
`Ford does not identify a comparison between road load and MTO, merely stating
`
`that Ibaraki ’882 operates in an “ENGINE-MOTOR DRIVE mode” at “vehicle drive
`
`torques above the IC engine’s MTO.” Id. at 29. By ignoring the comparison and
`
`causation requirements, Ford has essentially construed the claims to capture any
`
`control system where a torque value happens to be above/below a threshold
`
`irrespective of the criteria used by the control system. Such an interpretation of the
`
`claims is unreasonably broad and should be rejected.
`
`15
`
`

`
`Patent No. 7,237,634
`Patent Owner’s Response
`
`
`
`
`Case IPR2015-00787
`Attorney Docket No: 36351-0015IP7
`
`Therefore, for the reasons expressed above, for purposes of this IPR, the
`
`Board should: (1) construe “operating at least one electric motor to propel the hybrid
`
`vehicle when the RL required to do so is less than a setpoint (SP)” as “operating at
`
`least one electric motor to propel the hybrid vehicle when a comparison of the RL
`
`to a setpoint (SP) results in a determination that the RL required to do so is less than
`
`a SP,” (2) construe “operating an internal combustion engine of the hybrid vehicle
`
`to propel the hybrid vehicle when the RL required to do so is between the SP and a
`
`MTO” as “operating an internal combustion engine of the hybrid vehicle to propel
`
`the hybrid vehicle when a comparison of the RL to a SP and a MTO results in a
`
`determination that the RL required to do so is between the SP and a MTO of the
`
`engine,” and (3) construe “operating both the at least one electric motor and the
`
`engine to propel the hybrid vehicle when the torque RL required to do so is more
`
`than the MTO” as “operating both the at least one electric motor and the engine to
`
`propel the hybrid vehicle when a comparison of the RL to a MTO results in a
`
`determination that the torque RL required to do so is more than the MTO.”